Date: 19991207
Docket: T-773-99
OTTAWA, Ontario, this 7th day of December, 1999.
PRESENT: THE HONOURABLE MR. JUSTICE MacKAY
| IN THE MATTER OF an appeal from a |
| Decision of the Registrar of Trade-marks |
| (Opposition Board) dated March 3, 1999 |
| Refusing Application No. 803,796 for the |
| trade mark STICK MAN & STAR DESIGN |
BETWEEN:
BRAIN TUMOR FOUNDATION OF CANADA
Applicant
- and -
THE STARLIGHT FOUNDATION and
THE REGISTRAR OF TRADE-MARKS
Respondents
UPON motion dated the 10th day of September, 1999, on behalf of the applicant, for:
| 1) an Order setting aside or reversing the Order of Richard Morneau, Prothonotary, dated September 1, 1999, striking the affidavit of Sue Barnes, sworn May 28, 1999; |
| 2) an Order setting aside or reversing the Order of Richard Morneau, Prothonotary, dated September 1, 1999, dismissing the applicant's appeal of the Registrar of Trade-marks' decision of March 3, 1999; |
| 3) costs of this motion; |
| 4) such further and other relief as to this Honourable Court seems just. |
O R D E R
IT IS HEREBY ORDERED THAT:
| 1. The application is allowed in part. |
| 2. The decision referred to is set aside, but only insofar as it dismissed the applicant's appeal of the decision dated March 3, 1999 by the Registrar of Trade-marks. |
| 3. Costs shall be in the cause. |
(signed) W. Andrew MacKay
JUDGE
Date: 19991207
Docket: T-773-99
| IN THE MATTER OF an appeal from a |
| Decision of the Registrar of Trade-marks |
| (Opposition Board) dated March 3, 1999 |
| Refusing Application No. 803,796 for the |
| trade-mark STICK MAN & STAR DESIGN |
BETWEEN:
BRAIN TUMOR FOUNDATION OF CANADA
Applicant
- and -
THE STARLIGHT FOUNDATION and
THE REGISTRAR OF TRADE-MARKS
Respondents
REASONS FOR ORDER
MacKAY J.
I. The applicant, Brain Tumor Foundation of Canada, appeals from a decision of Prothonotary Morneau, dated September 1, 1999, seeking an order setting aside the Prothonotary's determination which struck out the affidavit of Sue Barnes filed by the applicant, and also dismissed the applicant's appeal from a decision of the Registrar of Trade-marks dated March 3, 1999.
II. The application raises two issues. The first concerns the process of appeals to this Court from decisions in relation to opposition proceedings pursuant to s. 56 of the Trade-marks Act (the "Act"1), particularly s-s. 56(5) which permits "evidence in addition to that adduced before the Registrar" to be presented in an appeal to this Court. The second issue concerns the authority of the Prothonotary, in light of Rule 50 of the Federal Court Rules, 1998, to dismiss an appeal to the Court pursuant to s. 56 of the Act, and whether he erred in so doing.
Background
III. The applicant made application No. 803,796 in February 1996 to register the trade-mark "Stick Man & Star Design" based on its use in Canada since at least October and November 1995 in association respectively with its publications containing information in relation to brain tumors, and with services of its charitable operations in funding brain tumor research, providing patient and family support services and operating a brain tumor tissue bank. The application to register also included the intention to use the trade-mark in Canada in association with handbooks respecting brain tumors.
IV. The applicant's trade-mark, as proposed for registration, was advertised for opposition purposes on December 11, 1996. The Starlight Children's Foundation (formerly The Starlight Foundation), another charitable organization, filed a statement of opposition in February 1997, on grounds that the applicant's trade-mark was not registrable because it was confusing with Starlight's registered trade-mark, No. TMA 372,769.
V. The applicant filed a counter-statement to the opposition in September, 1997. The respondent, Starlight, filed as evidence two affidavits and it also filed written argument. The applicant elected not to file any evidence or written argument and so advised the Registrar. Neither party requested an oral hearing. The Registrar determined, after comparing the trade-marks in light of the evidence presented, and in particular the degree of resemblance between the trade-marks at issue, and "bearing in mind that the applicant has not taken any active steps in this opposition proceeding subsequent to filing its counter-statement", that the applicant had not met the burden upon it of showing that there would be no reasonable likelihood of confusion.
VI. In May 1999 the applicant filed a notice of application, initiating an appeal in this Court, pursuant to s. 56 of the Act, from the Registrar's decision. In support of that application the affidavit of Sue Barnes was filed, attesting to the use of the applicant's trade-mark in its activities, and her submissions that there is no confusion between the trade-marks in issue.
VII. On July 20, 1999, the respondent filed a motion to strike out the affidavit of Sue Barnes and to dismiss the applicant's appeal. By his Order of September 1, 1999, Prothonotary Morneau allowed the motion, struck the applicant's affidavit sworn by Sue Barnes and dismissed the applicant's appeal.
VIII. In this appeal of that Order, the applicant urges that the Prothonotary erred in law in striking the affidavit of Sue Barnes, which in the applicant's view constitutes "additional evidence" allowable pursuant to s-s. 56(5) for consideration on an appeal to this Court from the decision of the Registrar. The Prothonotary's decision, in part, states:
| The Respondent contends that the Applicant's affidavit sworn by Sue Barnes on May 28, 1999 does not constitute additional evidence permitted under Section 56(5) of the Trade-marks Act (the Act), since no evidence had been filed by the Applicant in the original opposition proceedings before the Registrar of Trade-marks. |
| ... |
| The Applicant argues that by virtue of the fact that the Respondent adduced two affidavits before the Registrar of Trade-marks, thus, the Sue Barnes' affidavit sworn May 28, 1999 does indeed constitute additional evidence to that adduced before the Registrar. |
| I do not share the Applicant's approach to subsection 56(5) of the Act. In my interpretation of said subsection, in order for a party to adduce additional evidence before the Court, that party - and not an opposing party - must first have adduced some evidence before the Registrar. I draw some support for my instant position from the reasons of this Court in Nissei Plastics Industrial Co. v. Pascal & Associates (1994), 86 F.T.R. 249, at 254 paragraph 17 and Primax Computer Corp. v. Primax Electronic (U.S.A.) Inc. (1995), 62 C.P.R. (3d) 75 at 80-81, even though in these two cases there was no evidence at all before the Registrar. |
| I therefore agree with the Respondent that the Applicant's affidavit sworn by Sue Barnes on May 28, 1999 should be struck. |
| I also agree that where the record clearly shows that the Applicant cannot discharge its legal burden of proof to obtain the relief sought, namely, to reverse the Registrar of Trade-marks' decision of March 3, 1999, the Court does not have to defer disposing of the Applicant's trade-mark application until after the exchange of representations by the parties. |
Additional Evidence
IX. Dealing first with the issue raised by the striking of the affidavit of Sue Barnes, the applicant urges that, pursuant to s-s. 56(5) of the Act, evidence in addition to that adduced before the Registrar may be adduced in this Court, which may exercise any discretion vested in the Registrar. Here evidence was adduced by the respondent in the opposition proceedings before the Registrar when the applicant relied upon its application for registration and its counter-statement without filing any further evidence or argument in response to the opposition. It is urged that its intentional decision not to file "evidence" in opposition proceedings does not bar the applicant from filing the Barnes affidavit in its appeal to this Court. Further, it is argued that under s-s. 56(5) of the Act the Court is required to consider the applicant's statutory appeal and there is no condition in the Act which limits the "additional evidence" that the Act expressly provides may be filed. Further, it is urged that in view of the statutory authorization to permit filing of further evidence, it is not within the Court's discretion to strike out the further evidence, adduced by affidavit, before it is submitted for consideration by a judge on the merits of the appeal.
X. Section 56 of the Act provides for appeals from the Registrar, in part in the following terms that are relevant in this case:
| 56. (1) An appeal lies to the Federal Court from any decision of the Registrar under this Act within two months from the date on which notice of the decision was dispatched by the Registrar or within such further time as the Court may allow, either before or after the expiration of the two months. |
56. (1) Appel de toute décision rendue par le registraire, sous le régime de la présente loi, peut être interjeté à la Cour fédérale dans les deux mois qui suivent la date où le registraire a expédié l'avis de la décision ou dans tel délai supplémentaire accordé par le tribunal, soit avant, soit après l'expiration des deux mois. |
| ... |
... |
| (5) On an appeal under subsection (1), evidence in addition to that adduced before the Registrar may be adduced and the Federal Court may exercise any discretion vested in the Registrar. |
(5) Lors de l'appel, il peut être apporté une preuve en plus de celle qui a été fournie devant le registraire, et le tribunal peut exercer toute discrétion dont le registraire est investi. |
XI. In the Primax case2, relied upon by the Prothonotary, my colleague Mr. Justice Denault dismissed an application to file an amending motion appealing the decision of the Registrar who had allowed registration of a trade-mark despite an opposition filed, when no evidence had been adduced in support of that opposition. The appellant, who had filed the opposition, was apparently an undischarged bankrupt at the time the opposition was filed and when the matter was heard by his Lordship, and its corporate successor was held in the circumstances not to be entitled, and out of time, to pursue the opposition by appeal of the Registrar's decision.
XII. The circumstances in Primax were extraordinary. While it is true the party seeking to appeal and to adduce "further evidence" had not filed evidence before the Registrar in opposition proceedings which its predecessor had initiated, it is also true that at the time opposition was filed and when the appeal was filed the party originally opposing registration was an undischarged bankrupt, and thus without capacity to be a party in such proceedings. That lack of standing was the basis of the decision of Denault J.; although in the course of that decision, referring to s-s. 56(5) my colleague commented3:
| In light of the specific language of this provision, which is clear and imperative, the appellant was barred on March 31, 1995, [the date when the notice of appeal was filed] and even more so now, from filing evidence in this court in support of its opposition since there was no evidence adduced before the Registrar. It seems apparent that Parliament intended to confer upon the Registrar the task of evaluating the evidence put forth by a party opposing the registration of a trade-mark whereas, this court, as an appeal court in these matters, is authorized by the legislation to accept additional evidence to that adduced before the Registrar. Thus, in the present case, the appellant does not have the right to file evidence on appeal since none has been filed in the original proceeding before the Registrar. ... |
XIII. Mr. Justice Denault also referred, as did Prothonotary Morneau, to the Nissei Plastics4 case. There my colleague Mr. Justice Gibson, dealing with an appeal from a decision in expungement proceedings under s. 45 of the Act, also discussed s-s. 56(5) and its application where evidence is brought forward on an appeal under s. 56 by one who presented no evidence before the Registrar. In that case, the owner of a registered trade-mark had failed to respond to directions to show evidence of use. Apparently, that direction had not reached the foreign owner of the trade-mark before the Registrar's decision to expunge the mark. Gibson J. commented that in his view s-s. 56(5) did not authorize filing of evidence by one who failed to file any evidence before the Registrar, but in the circumstances of that case he considered the evidence and found it wanting, in part, in relation to wares for which use was claimed on the basis of the evidence filed only on appeal to this Court.
XIV. In that case no evidence was introduced in the expungement proceedings before the Registrar, by either party. That circumstance, in similar proceedings for expungement, did not preclude consideration of evidence adduced on appeal in Lewis Thomson & Sons Ltd. v. Rogers, Bereskin & Parr5, where Mr. Justice Strayer commented:
| ... It appears to me, by virtue of s-s. 56(5) of the Trade-Marks Act, that the court is obliged to entertain the appeal and to entertain further evidence, if the appellant wishes to submit that further evidence. There is no condition laid down in the Trade-Marks Act which would limit the court in the evidence it receives: that is, the Act does not limit the court to receiving only such evidence as was not available at the time of the registrar's proceeding or that was not reasonably available to the appellant or not known about at that time. None of these criteria is prescribed, and it appears to be open to the appellant to bring in any new evidence. The fact that this evidence was not put before the registrar, it seems to me, is a proper matter for consideration with respect to costs but not otherwise. |
XV. Both the Lewis Thomson & Sons case and Re Wolfville Holland Bakery Ltd.6 are relied upon by the applicant in this case. In the latter, a case concerning an appeal from the Registrar's decision to expunge a trade-mark, evidence was received by the Court, on appeal, even though the trade-mark owner had failed to file evidence before the Registrar. There, President Thorson after referring to the purpose of the process for expungement (pursuant to then s. 44 of the Act), commented7:
| ...the Act protects the rights of the registered owner of the trade mark. He has two courses open to him. He may comply with the requirement of the Registrar by furnishing an affidavit or statutory declaration showing that the mark referred to is still in use. If it is, then it is not "dead wood" and there is no need of getting rid of it. |
| The registered owner also has the protection of recourse to the Court by way of appeal to it if the Registrar has decided to expunge the registration... |
XVI. The respondent Starlight urges that the opinions expressed in the Primax and Nissei Plastics cases are here persuasive, and having failed to file evidence with the Registrar the applicant should not be permitted to file evidence on an appeal. It is urged that the affidavit in question is the first and not "additional", evidence provided by the applicant. That interpretation, it is urged, supports the process established by Parliament, for determination of opposition proceedings on all relevant evidence by the Registrar, a specialized "tribunal", with an appeal to this Court on issues of law or fact, including any additional evidence.
XVII. The process for seeking registration of a trade-mark established by the Act includes provision for opposition to a proposed registration, and for a response by the applicant to that opposition, to be filed and considered by the Registrar in accord with s. 38. Following the filing of a statement of opposition setting out the grounds on which it is based, s. 38 provides in part:
| (4) If the Registrar considers that the opposition does not raise a substantial issue for decision, he shall reject it and shall give notice of his decision to the opponent. |
(4) Si le registraire estime que l'opposition ne soulève pas une question sérieuse pour décision, il la rejette et donne avis de sa décision à l'opposant. |
||||
| (5) If the Registrar considers that the opposition raises a substantial issue for decision, he shall forward a copy of the statement of opposition to the applicant. |
(5) Si le registraire est d'avis que l'opposition soulève une question sérieuse pour décision, il fait parvenir une copie de la déclaration d'opposition au requérant. |
||||
| (6) The applicant shall file a counter statement with the Registrar and serve a copy on the opponent in the prescribed manner and within the prescribed time after a copy of the statement of opposition has been served on the applicant. |
(6) Le requérant doit produire auprès du registraire une contre-déclaration et en signifier, dans le délai prescrit après qu'une déclaration d'opposition lui a été envoyée, copie à l'opposant de la manière prescrite. |
||||
| (7) Both the opponent and the applicant shall be given an opportunity, in the prescribed manner, to submit evidence and to make representations to the Registrar unless
|
(7) Il est fourni, de la manière prescrite, à l'opposant et au requérant l'occasion de soumettre la preuve sur laquelle ils s'appuient et de se faire entendre par le registraire, sauf dans les cas suivants_:
|
||||
| (7.1) The opposition shall be deemed to have been withdrawn if, in the prescribed circumstances, the opponent does not submit either evidence under subsection (7) or a statement that the opponent does not wish to submit evidence. |
(7.1) Si, dans les circonstances prescrites, l'opposant omet de soumettre la preuve visée au paragraphe (7) ou une déclaration énonçant son désir de ne pas le faire, l'opposition est réputée retirée. |
||||
| (7.2) The application shall be deemed to have been abandoned if the applicant does not file and serve a counter statement within the time referred to in subsection (6) or if, in the prescribed circumstances, the applicant does not submit either evidence under subsection (7) or a statement that the applicant does not wish to submit evidence. |
(7.2) Si le requérant ne produit ni ne signifie une contre-déclaration dans le délai visé au paragraphe (6) ou si, dans les circonstances prescrites, il omet de soumettre la preuve visée au paragraphe (7) ou une déclaration énonçant son désir de ne pas le faire, la demande est réputée abandonnée. |
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| (8) After considering the evidence and representations of the opponent and the applicant, the Registrar shall refuse the application or reject the opposition and notify the parties of the decision and the reasons for the decision. |
(8) Après avoir examiné la preuve et les observations des parties, le registraire repousse la demande ou rejette l'opposition et notifie aux parties sa décision ainsi que ses motifs. |
XVIII. In this case a statement of opposition was filed, and the registrar forwarded a copy of that to the applicant, which thereafter filed a counter-statement. Then, in accord with s-s. 38(7) both parties had opportunity to submit evidence on which they relied. The respondent Starlight, opposing the application, principally based upon its perception of confusion with its registered trade-mark, did file evidence. The applicant chose not to do so, and so advised the Registrar.
XIX. The failure of the applicant to file evidence was clearly a factor in the decision of the Registrar. The decision refers to that failure when referring to factors which the Registrar considered in light of the opposition raised with regard to potential confusion. It is not surprising that failure of the applicant to provide evidence was a factor in the decision of the Registrar that it had failed to meet its burden of demonstrating that there would be no reasonable likelihood of confusion between its mark and the registered mark of the respondent Starlight.
XX. In my view, the process for seeking registration, including the appeal process from a Registrar's decision in opposition proceedings, implicitly requires the applicant to demonstrate that its proposed mark should be registered whether or not there is opposition to the application. If there is opposition and the applicant chooses not to provide any evidence for consideration of the Registrar it runs the risk of an unfavourable decision by the Registrar. That decision, if appealed, may be contested, but not by relying upon evidence that was available and could have been submitted to the Registrar.
XXI. I am persuaded that the Prothonotary properly applied s-s. 56(5) in the circumstances of this case. As I construe the process under the Act, an applicant for registration of a trade-mark who elects not to provide evidence to support its application in opposition proceedings initiated before the Registrar by the owner of a registered trade-mark, may not complain if the Court declines to accept evidence by affidavit on an appeal from the Registrar's decision. That affidavit is not "evidence in addition to that adduced before the Registrar" within the meaning of s-s. 56(5) as that provision relates to an appeal from a decision in opposition proceedings. In such a case if the statutory process is to be respected, "evidence in addition to that adduced before the Registrar" on an appeal must be additional to the evidence adduced before the Registrar by the same party when provided the opportunity to do so pursuant to s-s. 38(7).
XXII. Thus, on the first issue I conclude the Prothonotary did not err in law in striking the affidavit of Sue Barnes which in the circumstances of this case did not constitute "evidence in addition to that adduced before the Registrar".
Prothonotary's authority to dismiss the appeal
XXIII. On the second issue it is urged that since the Prothonotary is expressly prohibited from determining a motion for summary judgment (Federal Court Rules, 1998, Rule 50(1)(c)), the dismissal of the applicant's statutory appeal is not a matter within the prothonotary's jurisdiction. In a technical sense the motion before the Prothonotary was not one for summary judgment. Nevertheless, it is urged that the decision to strike is the equivalent of a summary dismissal of the appeal, despite the applicant's statutory right to proceed to question the Registrar's decision.
XXIV. In my opinion, the Prothonotary had authority under the Federal Court Act and the Court's Rules to decide on the respondent's motion to strike the appeal. That was not a motion in respect of which the Trade-marks Act expressly confers jurisdiction on a judge, nor was it a motion for summary judgment, matters excluded under paragraphs (a) and (c) of Rule 51(1) from the authority of a Prothonotary. Consistent with his general authority to deal with all motions except those expressly excluded by Rule 50(1), in my opinion, it was not beyond that authority for the Prothonotary to deal with the motion in this case.
XXV. Nevertheless, in my opinion, in this case the Prothonotary erred in law in dismissing the applicant's application to appeal the Registrar's decision. Such an appeal is not dependent upon further evidence being adduced at the appeal stage. I do not share the Prothonotary's view that the record clearly shows the applicant cannot discharge its legal burden to reverse the decision of the Registrar of Trade-marks for at this stage that issue has not been argued. I note the notice of application filed by the applicant initiating its appeal sets forth a number of grounds, many of which refer to alleged errors in law by the Registrar. Those, of course, may be argued independently of further evidence.
Conclusion
XXVI. In the result, I allow the applicant's motion in part. An Order goes setting aside the Order of the Prothonotary dated September 1, 1999, insofar as it dismissed the applicant's appeal of the decision of the Registrar dated March 3, 1999. I decline to set aside the Prothonotary's Order insofar as it struck the affidavit of Sue Barnes.
(signed) W. Andrew MacKay
JUDGE
OTTAWA, Ontario
December 7, 1999.
__________________1 R.S.C. 1985, c. T-13, as amended.
2 Primax Computer Corp. v. Primax Electronic (U.S.A.) Inc. (1995), 98 F.T.R. 63, 62 C.P.R. (3d) 75 (T.D.).
4 Nissei Plastics Industrial Co. v. Pascal & Associates (1994), 86 F.T.R. 249 (T.D.).
5 (1988), 21 C.P.R. (3d) 483 (F.C.T.D.).
6 (1964), 42 C.P.R. 88 (Ex. Ct.).
7 Id., at 92.